DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice for all US Patent Applications filed on or after March 16, 2013
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Claims
This communication is in response to communications received on 9/30/25. Claim(s) 1, 4, 5, 7, 8, 10 and 11 is/are amended, claim(s) 2-3, 6, 9, and 12 is/are cancelled, claim(s) 13 is/are new, and applicant provides information on where support for the amendments can be found. Therefore, Claims 1, 4-5, 7-8, 10-11, and 13 is/are pending and have been addressed below.
Claims Without Prior Art Rejections
Claim(s) 1, 4-5, 7-8, 10-11, and 13 do not have prior art rejections. The remaining rejections are 101 as noted below.
Closest prior art to the claims without rejections include
Kenyon et al. (US 2023/0186248 A1) in view of Cornelius (W0 2023/172571 A1) for claim(s) 1, 4-5, 7-8, 10-11, and 13.
Response to Arguments
Applicant’s arguments, see applicant’s remarks, filed 9/30/25, with respect to rejections under 35 USC 112 for claim(s) 2-5 and 6-12 have been fully considered and are persuasive. The Examiner respectfully withdraws rejections under 112 for claim(s) 2-5 and 6-12.
Applicant’s arguments, see applicant’s remarks, filed 9/30/25, with respect to rejections under 35 USC 102 and 103 for claim(s) 1-12 have been fully considered and are persuasive. The Examiner respectfully withdraws rejections under 102 and 103 for claim(s) 1-12.
Applicant’s arguments, see applicant’s remarks, filed 9/30/25, with respect to rejections under 35 USC 112 for claim(s) 1-5 have been fully considered but they are not persuasive as far as they apply to the amended 112 rejection(s) below.
Applicant respectfully traversed the rejection on pg. 11.
The Examiner respectfully disagrees because the explanation does not address “The specification is devoid of adequate structure to perform the claimed function. In particular, the specification merely states the claimed function of the configured to. There is no disclosure of any particular structure, either explicitly or inherently, to perform the configured to.”
Thus, the argument(s) are unpersuasive.
Applicant’s arguments, see applicant’s remarks, filed 9/30/25, with respect to rejections under 35 USC 101 for claim(s) 1-12 have been fully considered but they are not persuasive as far as they apply to the amended 103 rejection(s) below.
Applicant respectfully traversed the rejection on pg. 11-13.
The Examiner respectfully disagrees because the claims here are not like those the Federal Circuit found patent eligible in Enfish because the claimed steps are a process that qualifies as an abstract idea for which computers are invoked merely as a tool, rather than being directed to a specific asserted improvement in computer capabilities.
The claims here are not like those the Federal Circuit found patent eligible in DDR because applicant’s claim(s) here is/are not solving an internet-centric problem specifically arising in the realm of computers or computer networks nor is/are the claimed solution(s) necessarily rooted in computer technology.
Applicant is relying on 2106.05(d) “well understood, routine, and conventional” however Examiner is relying on 2106.05(f) “apply it.” Examiner relied on “apply it” because of item (2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process of 2106.05(f).
The claims here are not like those the Federal Circuit (Court) found patent eligible in McRO because the patent claims here do not address problems unique to claimed rules that enable automation of specific animation tasks that previously could not be automated. Additionally, the McRO court discusses the absence of preemption in determining that the claimed invention was not "directed to" a judicial exception. Other decisions, however, do not consider the absence of preemption as conferring patent eligibility (e.g., Synopsys, Fair Warning, Intellectual Ventures v. Symantec, Sequenom, and OIP). Furthermore the test is not preemption but the two step alice test.
Thus, the argument(s) are unpersuasive.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim(s) 1 and 4-5 is/are rejected. Claim(s) 1 state(s) the limitation “wherein the back-end module comprises an Al module that is configured to operate on an interface to function application model.” Thus claim(s) 1 is/are indefinite because it is unclear what is meant by “operate on an interface to functional application model.” Appropriate correction/clarification is required. Claim(s) 4-5 is/are rejected because they depend on claim(s) 1.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112 (further explaining claim interpretation above)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim(s) 1 and 4-5 is/are rejected. Claim(s) 1 and 4-5 state(s) the limitation “module that is configured, module is configured, module configured” and as noted above invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. In particular, the specification merely states the claimed function of the configured to. There is no disclosure of any particular structure, either explicitly or inherently, to perform the configured to. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Appropriate correction/clarification is required. Claim(s) 4-5 is/are rejected because they depend on claim(s) 1.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350, 94 USPQ2d at 1171; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed)”. Additionally, original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Ariad, 598 F.3d at 1349, 94 USPQ2d at 1171.5,
Claim(s) 1 and 4-5 is/are rejected. Representative claim(s) 1 and 4-5 recite(s) “module that is configured, module is configured, module configured.”
Examiner notes the bolded portion of the representative claims above is new matter. Initially, Examiner notes the bolded portion recites “module configured to, generator configured to, module is further configured, generator is further configured to” which does not appear to be supported by the originally filed disclosure. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. As described above in the 112b rejection, the disclosure does not provide adequate structure to perform the claimed function(s) of module configured to, generator configured to, module is further configured, generator is further configured to. Examiner notes the closest portions of the original disclosure include [0016, 0029, 0033-0037, 0041, 0043-0045] which merely states modules. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Therefore, none of these portions disclose the above bolded claim language. Appropriate correction/clarification is required. Claim(s) 4-5 is/are rejected because they depend on claim(s) 1.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1, 4-5, 7-8, 10-11, and 13 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The limitation(s) below for representative claim(s) 1 and 13 that, under its broadest reasonable interpretation, is directed to context-aware professional match-making.
Step 1: The claim(s) as drafted, is/are a process (claim(s) 7-8, 10-11, and 13 recites a series of components) and system (claim(s) 1 and 4-5 recites a series of components).
Step 2A – Prong 1: The claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) (emphasis added):
Claim 1: a plurality of user applications, wherein the plurality of user applications are mobile computing and web-based, and wherein the plurality of user applications facilitates interactions and connections between a plurality of users for a professional context;
an application process interface module for enabling an interface between a plurality of application processes;
a back-end module configured to process user data wherein the back-end module comprises an AI module to autonomously generate recommendations and scheduling wherein the Al module is configured to operate on an interface to function as an application model, and wherein the Al module is configured to autonomously generate, enhance, and adapt its functions, interfaces, and digital environment based on present context rather than relying on predefined rules, and wherein the Al module further comprises:
an interface module configured to enable communications external to the Al module and
a functions module configured to handle a plurality of internal processes, wherein the functions module further comprises a plurality of functions, including: a memory function configured to manage information in various forms to support the learning and adaptive capabilities of the Al module system functions including code function and worker function for handling automation, modification of tasks, execution of sequential tasks, and system operations analytic functions for interpreting and deriving insights from data creative functions for ideating, refining content, and boosting creativity, further comprising tools including brainstorm function and generation function abstract functions, including intuition function and analyst function for suggesting solutions, interpreting and analyzing data, and providing intuitive and analytical assistance prediction function, for anticipating outcomes based on its analysis and learning integration function that facilitates the seamless incorporation of external APIs; a plurality of safety functions that incorporates a plurality of safeguards, including a kill switch and sandbox function, wherein the Al module is operated in a sandbox environment with full control for execution and testing;
a calendar integration module configured to integrate meeting requests with preset digital calendars;
a notification service module configured to transmit connection and scheduling notifications to a plurality of pre-registered computing and communication devices;
a cloud storage module configured to store the user data, preferences, and corresponding matchmaking information;
a cloud database module interfaced with the cloud storage module and configured to support context-aware query execution across multiple data sources; and
a cloud compute module configured to run complex data processing methods for generating the context for matchmaking recommendations and process real-time geo-location data in conjunction with user context data to dynamically generate the matchmaking recommendations and update the matchmaking recommendations in response to detected changes in user context.
Claim 13: providing a plurality of user applications, wherein the plurality of user applications are mobile computing and web-based and wherein the plurality of user applications facilitates interactions and connections between a plurality of users for a professional context;
using an application process interface module to interface between a plurality of application processes;
using a back-end module to process user data, wherein the back-end module comprises an Al module;
managing information in various forms to support the learning and adaptive capabilities of the Al module;
handling automation, modification of tasks, execution of sequential tasks, and system operations;
interpreting and deriving insights from data;
ideating, refining content, and boosting creativity;
suggesting solutions, interpreting and analyzing data, and providing intuitive and analytical assistance;
anticipating outcomes based on its analysis and learning;
incorporating a plurality of external APIs; incorporating safeguards, including a kill switch; and, operating the AI module in a sandbox environment with full control for execution and testing.
autonomously generate recommendations and scheduling using the AI module;
using a calendar integration module to integrate meeting requests with preset digital calendars;
using a notification service module to transmit connection and scheduling notifications to a plurality of pre-registered computing and communication devices;
using a cloud storage module to store the user data, preferences, and corresponding matchmaking information;
using a cloud database module that is interfaced with the cloud storage module to support context-aware query execution across multiple data sources; and
using a cloud compute module to run complex data processing methods for generating the context for matchmaking recommendations and process real-time geo- location data in conjunction with user context data to dynamically generate the matchmaking recommendations and update the matchmaking recommendations in response to detected changes in user context.
Dependent claims 4-5, 7-8, and 10-11 recite the same or similar abstract idea(s) as independent claim(s) 1 and 13 with merely a further narrowing of the abstract idea(s) of: .
The identified limitations of the independent and dependent claims above fall well-within the groupings of subject matter identified by the courts as being abstract concepts of:
a method of organizing human activity (commercial or legal interactions including advertising, marketing or sales activities or behaviors, or business relations) because the invention is directed to context-aware professional match-making.
Step 2A – Prong 2: This judicial exception is not integrated into a practical application because:
The additional elements encompassed by the abstract idea include system, applications, applications are mobile computing and web-based, interfaces, modules, computing and communication devices, AI, autonomously, API, database, storage (claim(s) 1), interface, home screen (claim(s) 1), computer, applications, applications are mobile computing and web-based, modules, AI, API, database, storage (claim(s) 13), module, AI (claim(s) 4-5), user application (claim(s) 8), module (claim(s) 11).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements as described above with respect to Step 2A Prong 2 fails to describe:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine – see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo.
Thus the additional elements as described above with respect to Step 2A Prong 2 are merely invoked as a tool and/or general purpose computer to apply instructions of an abstract idea in a particular technological environment, and/or mere application of an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological field do not integrate an abstract idea into a practical application (MPEP 2106.05(f)&(h)).
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus the additional elements as described above with respect to Step 2A Prong 2 are merely invoked as a tool and/or a general purpose computer to apply instructions of an abstract idea in a particular technological environment, and/or mere application of an abstract idea in a particular technological environment and merely limiting the use of an abstract idea to a particular technological field do not integrate an abstract idea into a practical application and thus similarly the combination and arrangement of the above identified additional elements when analyzed under Step 2B also fails to necessitate a conclusion that the claims amount to significantly more than the abstract idea for the same reasons as set forth above (MPEP 2106.05(f)&(h)).
Conclusion
When responding to the office action, any new claims and/or limitations should be accompanied by a reference as to where the new claims and/or limitations are supported in the original disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP §706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WEBB whose telephone number is (313)446-6615. The examiner can normally be reached on M-F 10-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry O’Connor can be reached on (571) 272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.W./Examiner, Art Unit 3624
/Jerry O'Connor/Supervisory Patent Examiner,Group Art Unit 3624